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The recent judgment of the EU General Court in Now Wireless Limited v OHIM serves as a useful reminder that evidence of use of a registered trademark should be collated and maintained if the Mark is not to be subject to cancellation for lack of use. A continuous period of non-use of a registered mark of five years means that third parties may successfully apply for cancellation which would mean that the registrant no longer had the protection of the Mark.
In the Now Wireless case, Starbucks (HK) Limited was granted registration of the Mark above for “Now”. In 2004 and in 2010 Now Wireless Limited filed an application for its revocation on the basis that it had not been put to genuine use in the European Union in respect of all the services for which it had been registered for a continuous period of five years. The Mark was revoked in certain use classes by the Cancellation Division in 2011. Now Wireless appealed that decision, seeking revocation in Class 42 as well.
The OHIM Board of Appeal found that genuine use of the Mark had been shown by the production of press cuttings and a list of the destinations of the proprietor’s field engineers, proving genuine use of the contested Mark in London and the Thames Valley which was sufficient to constitute genuine use in the European Union. The Appeal was dismissed and Now Wireless had to pay the costs.
The Court took into account web page extracts showing the nature of the services provided, press cuttings and advertising campaigns using the Mark. To maintain rights in trademark registrations, a folder of evidence should be maintained. Dated copies of marketing material should be retained, as should records of annual turnover for goods promoted under the trademarks and annual marketing/advertising costs for the goods sold under the marks.
For guidance on trademark registration and how best to protect your intellectual property against unfair competition and passing off, contact Tony Catterall, Head of the Intellectual Property Team at Taylors, on 01254 297900 or via email at tony.catterall@taylors.co.uk. Taylors is the only North West based firm to have been appointed as a legal affiliate to the National organisation Anti Copying In Design (“ACID”).
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When to keep a record of Trademarks? NOW!